Zimbabwe: Lion Match Proprietary Limited is
a South African company trading in Zimbabwe some years ago through a
subsidiary, Lion Match Zimbabwe Limited (initially Lion Match Rhodesia Limited).
The latter was sold including its trademark and goodwill and the Lion Match
brand continued in the country first with both companies trading and then later
only Lion Match Zimbabwe Limited.
In 2000, due allegedly
to the harsh economic climate in Zimbabwe at the time, Lion Match Zimbabwe
Limited allowed the Lion Match trademark to lapse and stopped trading in the
associated product. Lion Match Proprietary Limited later acquired a renewed
interest in trading in the country and sought to file a trademark to protect the
Lion brand.
Lion Match Zimbabwe
became aware of this and made their own application for the trademark. The
Registrar was faced with the issue as to who ought to be granted the trademark.
The difficulty was that Lion Match Zimbabwe’s trademark had lapsed for in
excess of three years and no move had been made to renew it until after Lion
Match South Africa’s filing.
The Registrar
acknowledged the economic difficulties faced by Lion Match Zimbabwe and found
in their favour. Aggrieved by this, Lion Match South Africa approached the Intellectual
Property Tribunal for relief. All eyes were on this forum as it was its maiden
case and those concerned waited with bated breath as to what the outcome would
be.
The issue before the Tribunal
was the consequences of non-renewal. In reaching its decision, the court
examined section 24 of Zimbabwe’s Trade Marks Act. It found that in the event
that a trademark has been removed from the register on account of non-payment
of fees, it can only be restored within a period of three years from the date
of expiry. After this three year period, the previous owner of the trademark
loses legal rights to the trademark and another party can appropriate and
register it.
This places the party
who has lost the rights to the trademark on an equal footing with any other
party who wishes to register the trademark. The parties had, in fact, both
acknowledged this as reflected in them both having made fresh applications.
Lion Match Zimbabwe contended, in addition to issues pertaining to the economy,
that they ought to be granted the trademark as they had built up goodwill
within the country. The court did not accept this because they had ceased
trading for some time. On this basis, the courts found in favour of Lion Match
South Africa Proprietary Limited because they were the first party to seek
registration of the trademark after its expiry.
Afro Leo, naturally perturbed about his brethren lions fighting, suggests that
this is the right outcome. If Lion Match Zimbabwe had residual rights to the
name through their use then they still have the option to oppose of cancel the trade
mark filed by Lion Match South Africa. This did not occur. The lesson here is
to be vigilant in the maintenance of one’s trade marks. This is especially so in
first-to-file jurisdictions.
This matter was also reported
on by Spoor and Fisher and All Things IP 4 Africa
Brought to you by Afro
Elle
